Negotiating Patent Indemnification Provisions

Allocating Patent Infringement Risk Through Indemnification Clauses, Reps and Warranties, and Limitation of Liability

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Tuesday, July 17, 2012

Recorded event now available

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Course Materials

This CLE course will prepare counsel to IP owners, licensees and licensors to protect their interests by allocating patent infringement risks during negotiations of indemnification provisions in a patent license or vendor contract.

Description

Indemnification provisions are often overlooked but are a critical part of any patent agreement. Effective drafting and negotiation of indemnification provisions are key to protecting business interests and minimizing litigation costs.

Many businesses require indemnification provisions in vendor contracts that include detailed specifications that limit the vendor's ability to design away from certain technology and then seek indemnification. Counsel to vendors must develop strategies to manage their risks.

Counsel to all parties must carefully consider the scope of liability covered by the indemnification obligation, as well as liability triggers and indemnification of third parties, when negotiating the contract terms.

Listen as our authoritative panel of patent attorneys provides a detailed briefing on patent indemnity provisions, alternatives to patent indemnity, and potential pitfalls when drafting and negotiating indemnification clauses. The panel will outline strategies to avoid paying unnecessary patent litigation fees while ensuring the company’s interests are protected.

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Outline

  1. Patent indemnity
    1. Type of transaction
    2. Definitions
    3. Sample clauses
    4. Application of UCC Article 2
    5. Applicable patent-related case law
  2. Negotiation and drafting issues—indemnification clauses
    1. Allocating risk between seller and buyer
    2. Indemnities of the customer’s customer
    3. Failing to understand and consider intended uses of the product
    4. Timing of reimbursement
  3. Negotiation and drafting issues—reps, warranties and limitations of liability
    1. Types of reps and warranties
    2. Scope of reps
    3. Scope of warranties
    4. Continuing warranties
    5. Limitations of liability
  4. Customer/licensee insurance to protect seller/licensor
    1. Applicable in pure patent/technology licenses?
    2. Coverage
    3. Beneficiaries
    4. Certificates
    5. No cancellation without notice provisions

Benefits

The panel will review these and other key questions:

  • What are the key terms to address in the indemnification provision from the perspective of the IP owner, licensee and licensor?
  • What indemnification alternatives should parties consider when negotiating a license agreement or vendor contract?
  • What approaches should counsel use to protect a client's interests when negotiating an indemnification provision?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Robert E. Krebs
Robert E. Krebs
Partner
Nixon Peabody

Mr. Krebs focuses his practice on intellectual property litigation, patent prosecution, and patent portfolio...  |  Read More

Eleanor Hynes Yost
Eleanor Hynes Yost
Atty
Goodwin Procter

Her practice focuses on protecting and enforcing patent, trademark, copyright, and other intellectual property rights....  |  Read More

Ira A. Schreger
Ira A. Schreger
Partner
Vinson & Elkins

He focuses primarily on the structuring, preparation, and negotiation of agreements for a broad range of intellectual...  |  Read More

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